Follow up: Revised German Patent Act is now in Force

Besides the discussion around the exception to the automatic injunction – where Germanys presiding judges in patent infringement chambers have already taken their position – as reported by Juve – it is important to note that not all changes come into force immediately.

The law includes a 9-month grace period for Germany’s Patent Court to apply sec. 83 (1) of the Patent Act. This provision is supposed to close the so-called injunction gap. Hereafter the Patent Court needs to give its assessment over a pending nullity action within 6 months from filing the action. However, the Patent Court would most likely not have been able (due to high caseload) to immediately ensure such 6-month period. The Court was given another nine months to prepare to comply with the provision.

Importantly, patentees defending nullity actions must be aware that sec. 82 of the Patent Act is not covered by a grace period and therefore must be prepared to immediately comply with a strict time-regime. After service of a nullity action, the defendant has 2 months only to reply (which can be prolonged by another one month). This timetable is supposed to have both parties heard prior to the court’s assessment (which is due after 6 months from rendering service to the defendant).

This means that by April 2022 the injunction gap will likely be gone. A huge improvement to the German Patent system from the perspective of alleged infringers.

We had also reported about the implementation of sec. 145a of the Patent Act enabling parties to protect their trade secrets in patent proceedings by making a claim for trade secret protection. Although trade secret protection is now available, and litigants can make trade secret claims so as to allow them to defend infringement claims but also protect their trade secrets, the court must still decide whether or not to grant trade secret protection. We therefore recommend not treating the outcome of such an application as a foregone conclusion.

It is also noteworthy that this change should be able to overcome certain objections for subpoena according to 28 U.S. Code § 1782 where a litigant in the US objects to a claim for discovery based on the unclear structure of German trade secret protection in patent infringement matters. The new regime gives a much clearer view on procedural means and measurements to protect trade secrets by the courts.

The text of the revised law is now available (in German only).

[1] The English Version will be published here